Expressive Use and Parody Risk Checklist: Clearing Creative Uses of Third-Party Marks

By Casey Scott McKay · 2024-04-04

This checklist runs a creative project that uses somebody else's trademark through a twelve-phase clearance screen, from intake to sign-off, in the order the questions actually have to be answered. It starts by separating every distinct use in the project into its own row, because a film and the merchandise sold alongside it are two cases with two frameworks, then applies the threshold source-identifier test from Jack Daniel's Properties before anything else. Only uses that survive that test reach the Rogers artistic-relevance and explicit-misleadingness screen; uses that fail it go into an ordinary likelihood-of-confusion analysis with the parody weighed as an input under the Haute Diggity Dog framework. Later phases work through the fame threshold and the three dilution exclusions in Section 1125(c)(3) of the Lanham Act, the copyright, right-of-publicity, domain, platform, and paid-search claims that travel alongside a trademark claim, and the contemporaneous design record that decides the intent factor two years later. It closes with concrete mitigation specifications for redesign, house-mark placement, pricing, channel, and disclaimers, a four-tier sign-off matrix, a privileged opinion structure, and an escalation sequence for the day a demand letter arrives. A single invented matter, a two-person animation studio in Providence, is carried through every phase.

IP and Technology > Trademarks | Checklist | Published 4 April 2024 - Updated 18 February 2026 | Casey Scott McKay - marksy.us

Summary. This checklist runs a creative project that uses somebody else's trademark through a twelve-phase clearance screen, from intake to sign-off, in the order the questions actually have to be answered. It starts by separating every distinct use into its own row, because a film and the merchandise sold alongside it are two cases with two frameworks, then applies the threshold source-identifier test from Jack Daniel's Properties v. VIP Products before anything else. Only uses that survive that test reach the Rogers artistic-relevance and explicit-misleadingness screen; uses that fail it go into an ordinary likelihood-of-confusion analysis with the parody weighed as an input under the Haute Diggity Dog framework. Later phases work through the fame threshold and the three dilution exclusions in 15 U.S.C. § 1125(c)(3), the copyright, right-of-publicity, domain, platform, and paid-search claims that travel alongside, and the contemporaneous design record that decides the intent factor two years later. It closes with mitigation specifications for redesign, house-mark placement, pricing, channel, and disclaimers, a four-tier sign-off matrix, a privileged opinion structure, and an escalation sequence for the day a demand letter arrives. A single invented matter — a two-person animation studio in Providence — is carried through every phase.

Keywords: expressive use clearance · parody risk assessment · source identifier test · rogers screen · artistic relevance · explicitly misleading · jack daniel's v. vip products · conjure differentiate communicate · dilution exclusions · noncommercial use exclusion · trademark parody checklist · pre-launch clearance · disclaimer design · litigation hold · design record · house mark placement · trade dress parody · right of publicity clearance · clearance opinion privilege · risk tier sign-off

What this checklist is for

You have a creative project that uses a brand you do not own — a film with a billboard in it, a song with a product name in the hook, a T-shirt, a can, a video game, an NFT drop, a satirical website, a stage name. Somebody has to decide whether it ships. This is the screen that decides it.

Who should use it. Outside counsel running a pre-launch clearance for a creator, studio, agency, or brand; in-house counsel deciding whether the company's own campaign crosses a line; a litigator triaging a matter in the first forty-eight hours after a demand letter; and a founder or producer who wants to know what counsel will ask before the meeting.

What it is not. It does not teach the doctrine. The law is in Rogers, Jack Daniel's, and the Trademark Parody Problem, and the litigation mechanics — pleading, anti-SLAPP, surveys, settlement postures — are in Litigating Expressive-Use Trademark Disputes. Read the article once before you use this; every term here is used the way it is used there.

What you'll need before you start. High-resolution images of the project as a consumer will meet it, from every surface. The layered source files with version history intact. The launch plan: price, channel, quantity, date, ad spend. A list of every place the third-party mark appears, including the ones nobody thinks of — the domain, the app icon, the Shopify product handle, the keyword list in the ad account. Every contract touching the work: freelance agreements, co-packer terms, marketplace terms, the insurance policy. And a signed engagement letter, because everything you produce after this point should be privileged.

The worked example, carried throughout. Hollis & Vane Studio LLC is a two-person animation shop in Providence — Dara Hollis and Milo Vane. In March 2025 they released Last Mile, an eleven-minute short in which a delivery drone crashes into a rooftop billboard for an energy drink called VOLTRASH — an unmistakable riff on VOLTRAY, a genuinely famous drink sold by Voltray Beverage Corp. of Austin. Same jagged lightning glyph, same acid-green-on-black. The film screened at four festivals and streams free. On 2 September 2025 the studio books an hour with counsel because it wants to launch a merch page on 16 September: a canned beverage called VOLTRASH ENERGY reading "0% ELECTROLYTES, 100% REGRET," four-packs at $22, plus a shirt, the domain voltrash.shop, and a Google Ads campaign an intern has already built around the phrase voltray energy drink. The companion guide tells the story of a studio that launched first and got a demand letter. This is the call that studio did not make.

The phases at a glance

| Phase | The question you answer | Who does it | Typical time | |---|---|---|---| | 1 | What exactly are we clearing, and is it privileged? | Counsel + client | 1 hour | | 2 | How many distinct uses are in this project? | Counsel | 1–2 hours | | 3 | What rights actually exist, and who owns them? | Counsel or search vendor | 2–8 hours | | 4 | Is each use a designation of source for our own goods? | Counsel | 1–3 hours | | 5 | For non-source uses: artistic relevance, and does it explicitly mislead? | Counsel | 1–2 hours | | 6 | For source uses: does the parody survive the confusion factors? | Counsel | 3–6 hours | | 7 | Is the target mark famous, and do the dilution exclusions hold? | Counsel | 2–4 hours | | 8 | What non-trademark claims travel with this? | Counsel | 2–5 hours | | 9 | Is the intent record built and frozen before launch? | Client, supervised | 2–4 hours | | 10 | What changes to the design, price, channel, and copy reduce risk? | Counsel + design | 3–8 hours | | 11 | What tier is this, who signs, and what goes in writing? | Partner sign-off | 2–4 hours | | 12 | What happens the day a letter arrives? | Counsel | Same day |

Phase 1 — Open the file and protect it

[ ] Send an engagement letter or internal-privilege memo before the intake call, and label every downstream work product "CONFIDENTIAL — ATTORNEY-CLIENT PRIVILEGED."
- Why. The clearance analysis you are about to write is the single most damaging document in the matter if it is produced. Third-party search reports are generally discoverable; counsel's opinion generally is not.
- Trap. Do not label the opinion "attorney work product" unless it is genuinely litigation-driven. An availability-and-risk opinion written before any dispute exists is advice, not work product, and the wrong label invites a challenge to the right label.
[ ] Ask the client, in writing, whether it has already received any communication from the mark owner — including a platform takedown, a marketplace listing removal, or a DM from a brand's social account.
- Why. The answer changes Phase 1 from clearance to dispute triage, moves the litigation hold in Phase 9 to today, and may already have started a limitations or laches clock.
[ ] Collect the exhibit set as image files, not descriptions: front, back, and every printed surface at 300 dpi or better; a screen recording of the listing page and checkout flow; the app icon at every size; frame grabs at the timecode where the mark appears.
- Trap. Counsel who analyzes a project from a written description will get the source-identifier question wrong. Judges decide these cases by looking at the object. So should you.
[ ] Ask for the launch plan in numbers: unit price, unit count, channel, launch date, ad budget, territories.
[ ] Confirm who owns the artwork. If a freelancer drew it, get the assignment before you spend another hour; see Who Owns the Work.

Worked example. Hollis & Vane sends 14 images, a 40-second screen recording of the Shopify draft, and one line that turns out to matter: "the shirt art is Milo's, the can art was done by a contractor in Lisbon on an invoice, no contract." That contractor owns the copyright in the can art until somebody papers it.

Phase 2 — Characterize every use, one row per use

[ ] Build a use inventory table with one row per distinct appearance of the third-party mark. Columns: where it appears, what form it takes (word, logo, trade dress, color, sound, character), whether anything is sold, what the buyer sees at the moment of decision, and the framework you expect to apply.
- Why. The single most expensive mistake in this area is analyzing a project as one thing. A film and the merch page beside it are two cases governed by two frameworks with two outcomes.
- Authority. Jack Daniel's Props., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023), turns on how the accused party uses the designation — which means the answer can differ from surface to surface within one project.
[ ] Separate content uses (the mark inside the expressive work) from branding uses (the mark, or a riff on it, naming what you sell).
[ ] Flag every place the designation names a series rather than a single work. Titles of individual books, films, and songs are generally not source identifiers for goods; series and franchise names usually are.
[ ] Search the client's own files for any instance of ™, ®, "our brand," a style guide entry, a pitch deck slide, or a filed application covering the riff.
- Trap. A client's own intent-to-use application on the joke converts an expressive use into a source-identifying use and hands the other side an admission. See Intent-to-Use Applications. Withdrawing the application after a demand letter does not erase it.
[ ] Add rows for the uses people forget: the domain, the social handle, the Shopify product handle in the URL, the paid-search keyword list, the ad headline, the packing slip, the influencer script.

Worked example. The inventory runs to nine rows. Row 1 is the billboard in Last Mile — content use, nothing sold, four seconds. Row 4 is the can — VOLTRASH printed where a brand goes, on a beverage. Row 7 is the domain voltrash.shop. Row 9 is the Google Ads campaign, where the intern has bid on voltray energy drink and written the headline "The Energy Drink That Hates You Back." Rows 1 and 4 are two different cases. Row 9 is a third one entirely, governed by the analysis in Buying a Competitor's Name and the Keyword Advertising, SEO, and Search Marketing Toolkit.

Phase 3 — Establish what rights exist and who owns them

[ ] Search USPTO Trademark Search at tmsearch.uspto.gov by the target's owner name, not just the word mark, using the owner field tag — this surfaces the whole portfolio, including registrations for goods you did not expect.
- Why. The scope of the identification of goods, not the fame of the brand, decides how close your product is. A drinks company with a registration in Class 25 for apparel changes the shirt analysis.
[ ] Pull the full file wrapper for each relevant registration from TSDR at tsdr.uspto.gov: the drawing, the specimen, the identification, any disclaimers, any acquired-distinctiveness claim under § 2(f), and the maintenance filings.
[ ] Run a design-code search for the logo elements you are riffing on, using the USPTO Design Search Code Manual (a lightning bolt sits in category 01.15, natural phenomena).
- Trap. Word searches miss logo rights. If your joke depends on the glyph, search the glyph.
[ ] Check assignment.uspto.gov for chain of title. A mark that moved in an asset sale may have a new, more aggressive owner.
[ ] Pull the owner's TTAB history from TTABVUE. Opposition and cancellation filings are the cheapest available proxy for enforcement appetite and for the categories the owner actually polices.
[ ] Search the Copyright Public Catalog for registrations covering the logo, the mascot, the packaging artwork, and any advertising the joke quotes.
[ ] Identify any real person implicated: a spokesperson, a founder, an athlete, a mascot modeled on someone. Note the governing state statute and the post-mortem term — Cal. Civ. Code §§ 3344, 3344.1 (70 years post-mortem); N.Y. Civ. Rights Law §§ 50–51 and § 50-f; Tenn. Code Ann. §§ 47-25-1101 et seq., amended in 2024 to reach voice and digital replicas.
[ ] Decide whether you need a full search or a knockout. For an orange- or red-tier project (Phase 11), order a full search with common-law and marketplace screening; the method is in Trademark Clearance Searching, Running a Full Trademark Clearance Search, and the Trademark Clearance Search Checklist.

Worked example. Voltray Beverage Corp. owns four live registrations: VOLTRAY in Class 32, the lightning glyph in Classes 32 and 25, and VOLTRAY in Class 25 for shirts and hats. TTABVUE shows eleven oppositions since 2019, nine of them against VOLT- formative marks for beverages, none against a parody. The Class 25 registration is the fact that reprices the shirt.

Phase 4 — The source-identifier test

This is the threshold. Run it before anything else, on every row of the Phase 2 inventory.

[ ] For each use, cover every other word and image on the item and ask: would a consumer read this designation as telling them who made the product?
- Authority. Jack Daniel's, 599 U.S. 140; Vans, Inc. v. MSCHF Prod. Studio, Inc., 88 F.4th 125 (2d Cir. 2023); Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th 1022 (9th Cir. 2024).
[ ] Score the objective indicators of trademark use rather than arguing about intent: prominence, size, type style, and visual placement (Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1040 (9th Cir. 2010)); repetition across surfaces (Kelly-Brown v. Winfrey, 717 F.3d 295, 309–10 (2d Cir. 2013)); use of ™ or ® (Moroccanoil, Inc. v. Marc Anthony Cosmetics, Inc., 57 F. Supp. 3d 1203, 1227 (C.D. Cal. 2014)); and use in a domain name.
[ ] Score the indicators pointing the other way: a distinct house mark carrying the source function (Packman v. Chicago Tribune Co., 267 F.3d 628, 639–40 (7th Cir. 2001)); no assertion of exclusive rights anywhere (Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1059 (7th Cir. 1995)); and an express disclaimer of rights in the designation (SportsFuel, Inc. v. PepsiCo, Inc., 932 F.3d 589, 598 (7th Cir. 2019)).
[ ] Ask whether the client has policed the designation against anyone, licensed it, or claimed it in a terms-of-use page.
[ ] Record the answer per row as SOURCE-IDENTIFYING, NOT SOURCE-IDENTIFYING, or CONTESTED, and route accordingly: not source-identifying goes to Phase 5; source-identifying skips Phase 5 and goes straight to Phase 6; contested runs both.
- Trap. "It's obviously a joke" is not an answer to this question. Jack Daniel's holds that a use can be expressive and source-identifying at the same time; the presence of a joke does not subtract from the branding function. A client who keeps re-answering with "but it's funny" has not understood the question.

Worked example. Row 1 (the billboard) is NOT SOURCE-IDENTIFYING — nobody reads set dressing as a designation of origin for an eleven-minute film. Row 4 (the can) is SOURCE-IDENTIFYING and it is not close: VOLTRASH is the product's name, in the position and prominence a brand name occupies, on a beverage sold next to beverages. Row 5, the shirt, is CONTESTED — the can art printed across the chest as a graphic, sold under the studio's own HOLLIS & VANE neck label, is the classic My Other Bag posture, but only if the neck label is real and the listing title does not read "VOLTRASH Tee."

Phase 5 — Artistic relevance and explicit misleadingness

Run this only on rows that came out NOT SOURCE-IDENTIFYING or CONTESTED in Phase 4.

[ ] Confirm the circuit. The Second, Fourth, Fifth, Sixth, Ninth, and Eleventh Circuits apply Rogers in some form; the Seventh has never adopted it (Eastland Music Group, LLC v. Lionsgate Entertainment, Inc., 707 F.3d 869, 871 (7th Cir. 2013)), and at least one district court has replaced it outright.
- Why. Whether an early exit exists is a venue fact, and venue is often within the client's control if it files first.
[ ] Write down, in one sentence, the artistic reason the mark is in the work — and make sure it is a reason about this work.
- Authority. Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989). The threshold is "above zero." E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008).
- Trap. Prong one is nearly unlosable but not entirely. The Sixth Circuit let a jury decide artistic relevance where the title had no discernible connection to the song. Parks v. LaFace Records, 329 F.3d 437, 452–59 (6th Cir. 2003). "It looked cool" is not an artistic reason; "the billboard establishes that this city is owned by the company the drone works for" is.
[ ] Audit every surface outside the work for an affirmative representation of source, sponsorship, endorsement, or approval: the poster, the trailer, the press kit, the festival program blurb, the storefront copy, the metadata description.
- Why. Prong two asks whether the use explicitly misleads, which most courts read as requiring more than the ordinary confusion showing — "particularly compelling" in the Second Circuit. Twin Peaks Productions, Inc. v. Publications International, Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993).
[ ] Strike every phrase in the marketing copy that implies permission: "in partnership with," "official," "presented by," "licensed," "featuring VOLTRAY." One line of a press release can convert prong two.
[ ] Confirm you are not in a title-versus-title case, which Rogers itself carved out. 875 F.2d at 999 n.5.
[ ] Where the use is pure criticism with nothing sold, test the cheaper element first: is there any use "in connection with any goods or services" at all? Radiance Foundation, Inc. v. NAACP, 786 F.3d 316 (4th Cir. 2015); Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005); Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003).
- Trap. Practitioners reach for the First Amendment and skip the element. The element is boring, costs a tenth as much to brief, and wins more often.
[ ] Make sure the joke is visible where the consumer meets the mark, not one click later. A gag that only lands after the mark has already drawn the visitor in is not a defense at the moment of confusion. People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 366–67 (4th Cir. 2001).

Worked example. Row 1 clears comfortably. The billboard is artistically relevant — it establishes the corporate ownership of the city, which is the film's whole premise — and nothing on the poster, in the festival program, or in the streaming metadata says anything about Voltray. Counsel notes that the film's IMDb page currently lists "Voltray" in the keywords field. That comes out today.

Phase 6 — The confusion screen, with parody as an input

Run this on every SOURCE-IDENTIFYING and CONTESTED row, and on every row in a circuit that will not apply Rogers.

[ ] Apply the three-part parody test in order and write the answer to each part: does the use conjure the famous mark, differentiate itself from it, and communicate an articulable element of satire or irony?
- Authority. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007).
- Trap. A design that only conjures is a knockoff. A design that only differentiates is a different product with a coincidental resemblance and no parody argument at all.
[ ] Name the target of the joke in one sentence, and confirm it is the mark owner. If the mark is being borrowed to comment on something else, you are in satire, and courts import the Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 580–81 (1994), distinction into trademark. Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997); Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 199–200 (5th Cir. 1998).
[ ] Run the circuit's confusion factors with the parody applied to each one, and write the memo factor by factor. The framework is in Trademark Infringement: Proving Likelihood of Confusion.
[ ] Measure product distance honestly. This is the factor that decides most parody cases and the one clients lie to themselves about.

| Factor | What to check on this project | What flips it against you | |---|---|---| | Strength of the mark | Is the target famous enough that the riff reads as a joke on sight? | A niche or regional mark — recognition is too thin to carry the joke | | Similarity | Is the difference apparent in the first second, at thumbnail size? | Differences that only appear on close reading, or at full resolution | | Proximity of goods | Is your product in a different aisle, a different store, a different budget? | Same category, same shelf, same buyer — the Starbucks problem | | Channel and price | Novelty pricing, gift channel, direct-to-consumer only? | Mass retail at a price point comparable to the target's | | Intent | Documented intent to comment, plus documented distancing choices | Design notes that read "make it look as close as we can get away with" | | Actual confusion | Any inquiry logged from a real buyer, including "is this official?" | Even a handful of real-world mistakes beats any amount of comedic theory | | Buyer sophistication | Considered purchase, informed audience | Impulse-priced goods bought in a scroll |

[ ] Search for the failure patterns before opposing counsel does: is the parody a competing brand in the same category (Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 113 (2d Cir. 2009)); is the execution good enough to invite belief rather than laughter (Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769 (8th Cir. 1994)); is the joke invisible at the point of sale (Doughney, 263 F.3d 359)?
[ ] If the parody depends on the target's trade dress — shape, color scheme, layout, gestalt — escalate a tier automatically and evaluate functionality and the strength of the claimed dress before the first render. Vans, 88 F.4th 125. See Trade Dress and the Functionality Doctrine, Protecting Trade Dress, and the Trade Dress Protection Checklist.
[ ] Consider whether the cheaper doctrine fits better. If the use refers to the owner rather than branding you, run nominative fair use instead: Descriptive and Nominative Fair Use and Raising a Trademark Fair Use Defense. Marketing teams clearing dozens of these a quarter should be working from the Trademark Fair Use Audit Checklist.
[ ] If a survey is likely to matter, read Justice Sotomayor's concurrence in Jack Daniel's before anyone writes a questionnaire, and never build the case on a "did they need permission" question. Design points are in Consumer Surveys in Trademark Cases and the Trademark Survey Design and Challenge Checklist.

Worked example. The can conjures (glyph, colors, silhouette), communicates (0% ELECTROLYTES, 100% REGRET is unmistakably about an energy drink's promises), and differentiates only weakly — same category, same format, same shelf. Proximity is fatal. The shirt is the opposite: apparel is a different aisle at a different price, the joke is the entire graphic, and the studio's own label carries the source function. Same joke, two answers, because the aisle is different.

Phase 7 — Dilution: fame, exclusions, and the fallback

[ ] Test fame before anything else. Section 1125(c)(2)(A) requires recognition "by the general consuming public of the United States." Niche fame does not qualify, and most dilution claims die here without a First Amendment argument being made.
- Authority. 15 U.S.C. § 1125(c)(2)(A); Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, 120 Stat. 1730. Background in Trademark Dilution Under the TDRA.
[ ] Work through the three exclusions in 15 U.S.C. § 1125(c)(3) in order, and record which ones survive:

| Exclusion | Covers | Lost when | |---|---|---| | § 1125(c)(3)(A) | Fair use, including parodying, criticizing, or commenting on the owner or its goods | The designation is used "as a designation of source for the person's own goods or services" — by the subsection's own terms | | § 1125(c)(3)(B) | News reporting and news commentary | Rarely contested | | § 1125(c)(3)(C) | Any noncommercial use | The use is source-identifying; Jack Daniel's forecloses reading (C) to swallow (A) |

[ ] Preserve the (A) exclusion by design, not by argument: keep the joke in the artwork and the client's own house mark on the label. That single decision is the difference between a defensible T-shirt and an indefensible can.
[ ] If the exclusion is lost, do not treat the claim as lost. Brief the six blurring factors in § 1125(c)(2)(B) with the parody's success as the central fact — Haute Diggity Dog forfeited the exclusion and still defeated dilution, 507 F.3d at 266–67, and Jack Daniel's expressly approved that structure.
[ ] Screen tarnishment separately and unsentimentally. Sexual, scatological, or drug-related associations unrelated to the target's own conduct are the classic loss. Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972); V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382 (6th Cir. 2010). Criticism of the target's actual product is a much stronger posture — compare L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987).
[ ] Check 15 U.S.C. § 1125(c)(6): ownership of a valid registration on the Principal Register is a complete bar to state dilution claims, which can dispose of a count on the pleadings.
[ ] Confirm the use is not a comparative advertisement in disguise. Altering a competitor's logo to mock it in an ad aimed at diverting sales is a different animal. Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994).
[ ] Where the client is the brand owner considering a claim, work the elements in the order they will be briefed: Bringing and Defending a Federal Dilution Claim and the Trademark Dilution Claim Checklist.

Worked example. VOLTRAY is plausibly famous — national television, twenty years, a name people use as a common noun. The can loses the (A) exclusion outright because VOLTRASH is the product's name. The shirt keeps it, provided HOLLIS & VANE is the neck label and the listing title is "Regret Tee," not "VOLTRASH Tee." There is no tarnishment problem: the joke is about caffeine and disappointment, not sex or drugs.

Phase 8 — The claims that travel alongside

[ ] Run a copyright analysis on every element you copied rather than evoked: the logo drawing, the mascot, the packaging illustration, the jingle, the advertising line. Trademark clearance does not clear copyright.
- Authority. 17 U.S.C. §§ 106, 107; Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023). Workflow in Fair Use After Warhol, Running a Fair Use Analysis, and the Fair Use Risk Assessment Checklist.
- Why. With a timely registration, statutory damages and fees under 17 U.S.C. §§ 504(c) and 505 can exceed the entire trademark exposure. See What Copyright Registration Actually Buys You.
[ ] Register the client's own work. File the Standard Application through the Copyright Office's eCO system (currently $65 for a standard online application, $45 for a single work by a single author who is the sole claimant; confirm at 37 C.F.R. § 201.3), and do it within three months of first publication so 17 U.S.C. § 412 remedies stay open. Mechanics in Registering a Copyright and the Copyright Registration Checklist.
[ ] Clear any identifiable person. Right of publicity is state law, is not preempted by your trademark analysis, and travels with a different defense set. See Your Face Is Not Public Domain, the Name, Image, and Likeness Clearance Checklist, and the Right of Publicity and Personal Brand Toolkit.
[ ] Screen every domain against the ACPA before registration, not after. Bad-faith intent to profit is a nine-factor inquiry with a fair-use factor and a safe harbor, 15 U.S.C. § 1125(d)(1)(B); see Cybersquatting and the ACPA.
[ ] Audit the paid-search account line by line. Bidding on the target's brand as a keyword is a separate claim with a separate body of law, and the ad copy — not the bid — is usually what creates the exposure. See the Keyword Advertising Compliance and Enforcement Checklist.
[ ] Read the platform terms. There is no trademark safe harbor: no analogue to 17 U.S.C. § 512 exists, and 47 U.S.C. § 230(e)(2) excludes intellectual property claims. Contributory exposure runs through Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 854 (1982), as applied in Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), and Ohio State University v. Redbubble, Inc., 989 F.3d 435 (6th Cir. 2021).
[ ] Expect the copyright takedown to be used as a trademark proxy, because § 512 makes platforms move in days. Prepare the counter-notice posture in advance: The DMCA Safe Harbor, Sending and Fighting a DMCA Takedown, and the DMCA Takedown Notice Checklist.
[ ] Clear music separately if there is any. Two copyrights, two licenses, no shortcuts: Music Clearance Checklist and the Music, Film, and Creative Industry IP Toolkit.
[ ] Check the insurance. A CGL policy's "personal and advertising injury" coverage typically reaches slogan and trade dress infringement only "in your advertisement" and carries broad IP exclusions. Creators shipping product need media liability or E&O written for content.
[ ] Read the fulfilment and marketplace contracts for the indemnity. Nearly all of them push the entire risk onto the seller, and the seller has almost never noticed.

Worked example. Three findings. The can art is owned by a Lisbon contractor. The billboard's cartoon rider is drawn from Voltray's real spokesperson, a retired motocross athlete, which puts a publicity claim on the table under her home state's statute. And the Google Ads headline "The Energy Drink That Hates You Back" runs against the keyword voltray energy drink — the keyword is defensible, the headline placed under a query for the target's own brand is much less so. The intern's campaign is paused before the meeting ends.

Phase 9 — Freeze the intent record before launch

[ ] Write a one-page design rationale memo, dated, signed by the designer, stating what the joke is about, why the target was chosen, and which specific changes were made to keep the product distinguishable.
- Why. Intent is decided by contemporaneous documents. Litigation declarations written two years later are discounted, and everyone in the room knows it.
[ ] Preserve the layered source files with version history intact — .ai, .psd, .fig, .blend — and export a dated PDF of each major iteration. Do not flatten, do not overwrite, do not "clean up the folder before launch."
[ ] Generate a SHA-256 manifest of the design folder on the day of freeze and email it to counsel, creating a third-party dated record that does not depend on file metadata.
[ ] Capture the differentiation decisions as a before/after sheet: the color you changed, the glyph you redrew, the ratio you altered, the word you lengthened. This is the exhibit that beats the intent factor.
[ ] Log price, channel, and quantity decisions with the reasoning attached, because those become the proximity and sophistication evidence.
[ ] Set up a confusion log before launch: a shared inbox rule and a support macro that captures any message asking whether the product is official, with date, verbatim text, and disposition.
- Why. The absence of actual confusion is only provable if someone was collecting. Twelve months of a clean log is worth more than an expert.
[ ] Turn off auto-delete everywhere the design conversation lives — Slack, Discord, Figma comments, Notion, iMessage — and confirm in writing that it is off.
- Authority. Fed. R. Civ. P. 37(e). Sanctions require only a failure to take reasonable steps; intent to deprive unlocks the severe remedies.
- Trap. A two-person studio whose Discord purges on a 30-day timer has manufactured the plaintiff's best exhibit without touching a file.
[ ] Issue a written litigation hold the moment a demand, takedown, or platform complaint arrives — not when suit is filed.
[ ] Do not create a document arguing the merits outside privilege. A designer's Slack message reading "legal says we're probably fine" is discoverable and is worse than silence.

Worked example. Hollis & Vane's design rationale memo runs 400 words and names three deliberate changes: the glyph rotated 40 degrees and given a cartoon face, the green shifted two steps toward yellow, and the can made matte rather than gloss. The before/after sheet is four images. Total cost, ninety minutes. It is the cheapest evidence in the file and the only evidence about intent that will exist.

Phase 10 — Mitigation, specified

Generic advice is useless here. Give the design team specifications.

[ ] Put a real house mark in the source position. The client's own brand goes where a brand goes — front of pack, neck label, listing title, above the fold on the product page — at no less than the visual weight of the joke.
- Why. This is the single highest-value change available. It attacks the Phase 4 question directly and, on the dilution side, preserves the § 1125(c)(3)(A) exclusion.
[ ] Never make the joke the product name. "Regret Tee by Hollis & Vane, featuring the VOLTRASH can" is a different legal object from "VOLTRASH Tee." Same shirt, same art, different case.
[ ] Do not file a trademark application on the joke. Parody has essentially never worked at the Board, because an applicant seeking registration is claiming the designation as a source identifier by definition. New York Yankees Partnership v. IET Products & Services, Inc., 114 U.S.P.Q.2d 1497 (T.T.A.B. 2015); Research In Motion Ltd. v. Defining Presence Marketing Group, Inc., 102 U.S.P.Q.2d 1187 (T.T.A.B. 2012). See Federal Court vs. TTAB.
[ ] Move the aisle. Change the product category if you can. Proximity is the factor that decides these cases, and it is the factor most within your control at the concept stage.
[ ] Price and channel away from the target. Novelty pricing, gift and direct-to-consumer channels, limited runs. Mass retail at a comparable price point converts a joke into a competitor.
[ ] Increase the visual distance in the first second, at thumbnail size. Test the product as a 200-pixel marketplace thumbnail, because that is where the purchase decision starts.
[ ] Write a disclaimer that does work, and place it pre-purchase, in the same visual field as the joke, in plain words: "Not made by, affiliated with, licensed by, or endorsed by [Owner]." Add the redirect — "If you're looking for [Owner], visit [owner].com" — because that is the version that actually reduces confusion at the moment it would otherwise occur.
- Trap. A disclaimer inside the packaging is decoration. A disclaimer added after a demand letter creates a before-and-after that invites the inference you knew there was a problem. Add it at launch, or add it as settlement consideration; never in between.
[ ] Scrub the marketing copy of "official," "partnership," "collab," "licensed," and the target's ® symbol used in a way that implies a relationship rather than acknowledging ownership.
[ ] Fix the paid-search account: remove the target's brand from the ad headline and display path, keep any brand keyword bidding under a written policy, and add negative keywords for the target's own product names.
[ ] Paper the ownership. Get the assignment from every contractor before launch, in a signed writing.
[ ] Consider asking. A short, non-adversarial permission request costs a few thousand dollars and occasionally works. It also creates a document, so decide deliberately — the general clearance framework across all three regimes is in the Fair Use and Permissions Toolkit.

Worked example. The recommendation is surgical: kill the can, ship everything else. The shirt launches with HOLLIS & VANE on the neck label and in the listing title, a standard disclaimer above the Add to Cart button, and the can art unchanged as a graphic. The domain moves from voltrash.shop to hollisandvane.com/regret. The ad headline changes. The film ships untouched. The joke survives intact; the only thing that dies is the beverage, which was the only row that put the studio in the target's aisle.

Phase 11 — Sign-off

[ ] Assign a tier and put it in the file. The tiers are the same four used in the companion guide, so that a matter escalating from clearance to litigation does not get re-scored.

| Tier | Fact pattern | Sign-off | Cost to clear | |---|---|---|---| | Green | Mark inside narrative content; nothing sold under it; no series naming | Associate, documented | $500–$1,500 | | Yellow | Joke as a design on merchandise sold under the client's own house brand; distinct category; visible differentiation | Partner review | $2,500–$6,000 | | Orange | Joke as the product or series name; adjacent category; any application filed on the joke | Partner sign-off plus written opinion | $8,000–$20,000 | | Red | Trade dress reproduction on a competing product; famous mark; sexual, scatological, or drug-related association; domain incorporating the mark | Do not proceed as designed | $15,000+ and a candid conversation |

[ ] Write the opinion, marked "CONFIDENTIAL — ATTORNEY-CLIENT PRIVILEGED," with five parts: the use inventory from Phase 2; the source-identifier determination per row; the framework that follows from it; the residual risk stated as a decision, not a hedge; and the conditions of clearance, listed as a numbered set of things that must be true at launch.
- Why. An opinion the client cannot act on is not an opinion. "There is some risk" is not advice; "ship rows 1, 5, and 7 subject to conditions 1–6, do not ship row 4" is.
[ ] Discuss with the client, before you write it, whether a negative opinion should be in writing at all. A written negative opinion the client proceeds against is a gift to the other side on willfulness; a written negative opinion is also sometimes the only thing that stops a marketing department.
[ ] Attach a caveat sheet identifying what the search did and did not cover — common-law uses, unregistered trade dress, foreign rights, pending applications not yet published.
[ ] Restate the conditions of clearance as a launch checklist the client can actually execute, and require photographic confirmation of the shipped product against it.
[ ] Diary a 90-day post-launch review: pull the confusion log, re-run the target's TTABVUE docket, and check whether the product drifted — because it always drifts, and the drift is usually toward the target.
[ ] Note the fee-shifting posture for the client's benefit. An "exceptional case" under 15 U.S.C. § 1117(a) after Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), only requires that the case stand out — a suit against an obvious parodist that loses on the pleadings can qualify. See What a Trademark Win Is Worth.

Phase 12 — Escalation

[ ] Issue the litigation hold the day the letter, takedown, or platform complaint arrives, and confirm auto-delete is off in every channel identified in Phase 9.
[ ] Do not answer the letter for at least 72 hours, and do not let the client answer it at all.
[ ] Re-run Phase 4 on the specific uses the letter attacks, and separate them in your first paragraph. Never let a film and a product be litigated as one thing. Model correspondence for both chairs is in Litigating Expressive-Use Trademark Disputes; the baseline forms are Responding to a Cease-and-Desist Letter, Sending an Effective Cease-and-Desist Letter, and the Trademark Cease-and-Desist Letter — Template.
[ ] Understand that the letter has already created declaratory judgment jurisdiction if it names a mark, names the product, asserts infringement, and sets a deadline. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007); 28 U.S.C. §§ 1338(a), 2201–2202. A civil action costs roughly $405 to file (a $350 statutory fee under 28 U.S.C. § 1914(a) plus the administrative fee — confirm the current schedule) and five figures to draft properly.
[ ] Propose a mutual standstill with everything tolled. One page. It removes the race to the courthouse, which is what otherwise forces both sides to spend $20,000 before anyone has spoken.
[ ] Ask, in writing, for the owner's licensing file for novelty and humor goods, any consumer research on humorous third-party uses, and the factual basis for fame under § 1125(c)(2)(A). The refusal is itself an exhibit.
[ ] Do not pull the product "temporarily to be safe" and then negotiate. Pull it as consideration, not as a gesture.
[ ] If an application is pending on either side, price the Board as an alternative: opposition is filed under 37 C.F.R. § 2.101 within 30 days of publication, the first 30-day extension of time to oppose is free under 37 C.F.R. § 2.102, and fees run per class under 37 C.F.R. § 2.6. See How to File a Notice of Opposition, the Notice of Opposition — Template, and TTAB Proceedings: Opposition vs. Cancellation.
[ ] Prepare the bond argument now, with numbers from the client's own books, in case a preliminary injunction motion lands. Fed. R. Civ. P. 65(c); Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 20 (2008); Preliminary Injunction Motion Checklist for Trademark Cases.
[ ] Draft any settlement release by use, with each accused use defined by exhibit, and carve the expressive work out by name. See the Trademark Coexistence Agreement — Template.

Common Mistakes

Analyzing the project as one thing. A film, a shirt, a can, a domain, and an ad account are five cases. Build the Phase 2 inventory or you will get one of them wrong.
Answering the source-identifier question with "but it's a parody." Jack Daniel's holds a use can be both expressive and source-identifying at once.
Filing an application on the joke. It converts an arguable expressive use into a documented source-identifying use, and loses at the Board on the way.
Reaching for the First Amendment when an element is available. Where nothing is sold, "in connection with any goods or services" is cheaper and wins more often.
Letting the joke live one click away. A parody that needs the mark to work before the punchline lands is not a parody at the moment of confusion.
Treating loss of the § 1125(c)(3)(A) exclusion as loss of the dilution claim. Haute Diggity Dog lost the exclusion and won on the blurring factors.
Adding the disclaimer after the demand letter. You have created the plaintiff's timeline exhibit.
Letting the design record evaporate. Flattened files, purged Discord, no dated rationale — and intent gets decided by the other side's narration.
Clearing the trademark and forgetting the copyright, the person, the domain, and the ad copy. Four regimes, four answers, one project.
Writing an opinion the client cannot act on. Numbered conditions of clearance, or it is not advice.

Deadlines at a Glance

| Trigger | Deadline | Authority | Note | |---|---|---|---| | Reasonable anticipation of a dispute | Immediately | Fed. R. Civ. P. 37(e) | Litigation hold; disable auto-delete the same day | | First publication of the client's own work | 3 months | 17 U.S.C. § 412 | Register to preserve statutory damages and fees | | Before filing a copyright suit | Registration decision must have issued | 17 U.S.C. § 411(a); Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. 296 (2019) | A pending application is not enough | | Copyright claim accrual | 3 years | 17 U.S.C. § 507(b); Warner Chappell Music, Inc. v. Nealy, 601 U.S. 366 (2024) | No separate damages bar on a timely claim | | Demand-letter response date | As stated, typically 10–14 days | Contractual, not legal | Request an extension in writing; the request itself is evidence of good faith | | Service of a complaint | 21 days to answer; 60 if service was waived | Fed. R. Civ. P. 12(a)(1)(A) | Rule 12(b)(2), (3), (5) defenses are waived if not raised now | | Service of a complaint (CA / TX state counts) | 60 days for a special motion to strike | Cal. Civ. Proc. Code § 425.16(f); Tex. Civ. Prac. & Rem. Code § 27.003(b) | Never move against the federal counts | | Ex parte TRO entered | Expires in 14 days absent extension | Fed. R. Civ. P. 65(b)(2) | Demand a real bond under Rule 65(c) | | Publication in the Official Gazette | 30 days to oppose | 37 C.F.R. § 2.101 | First 30-day extension is free, 37 C.F.R. § 2.102 | | DMCA counter-notice sent | Platform restores in 10–14 business days unless suit is filed | 17 U.S.C. § 512(g)(2)(C) | Filing a § 512(f) misrepresentation claim is a separate decision | | Any claim asserted | Notice "as soon as practicable" | Policy terms | Late notice is how coverage is lost | | 90 days post-launch | Self-imposed | — | Pull the confusion log; check for product drift |